Patent Law

Bottled

By Gary Odom and Jordan Kuhn

Industrial Dynamics (IDC) was found infringing 6,155,408 and 6,298,974, owned by Heuft Systemtechnik. The patents claim bottle handling and inspection for bottling plants. On appeal, IDC successfully challenged the claim construction.

Heuft Systemtechnik GmbH v. Industrial Dynamics Co. (IDC) (CAFC 2007-1417, -1462) (non-precedential)

The '408 patent is directed to a "method and apparatus for rotating rotationally symmetrical containers such as bottles, while transporting them under backup pressure." During prosecution of the '408 patent, the examiner repeatedly rejected the claims over PCT Publication WO 83/00135 ("the Christian reference"). The examiner eventually allowed the claims, however, after Heuft made various arguments and amendments in response to the rejections. The '974 patent is directed to a "method and apparatus for inspecting rotating containers." It is a divisional of the '408 patent, and therefore includes an identical specification. The examiner allowed all of the claims of the '974 patent without rejection.

IDC argued that prosecution esptoppel bottled claim scope.

IDC argues that the claims of the '974 patent cannot be construed to encompass stably arranging containers using exit angles less than 30°, because such angles were disclaimed during prosecution of the related '408 patent. Heuft counters that the claim terms were correctly construed, contending that the prosecution history of the '974 patent is silent as to the measure of the exit angle, and that any disclaimer that may have arisen during prosecution of the '408 patent does not apply to the claims of the '974 patent.

Case law for prosecution estoppel requires "clear and unmistakable" disclaimer.

Prosecution disclaimer occurs when a patentee, either through argument or amendment, surrenders claim scope during the course of prosecution. Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007). Amendments or arguments that are merely vague, ambiguous, or subject to other reasonable interpretation are not sufficient to surrender claim scope. Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003). Rather, in order for prosecution disclaimer to attach, the patentee's actions must be "clear and unmistakable." Id. at 1326.

IDC had a winner.

We agree with IDC that in the '408 patent, Heuft disclaimed "arranging . . . containers . . . stable" or "means for the stable arrangement of . . . containers" using angles less than 30°. This is because its actions during prosecution were clear and unmistakable.

The examiner persisted with a prior art reference until the claims were amended to get around it.

From the outset of prosecution of the '408 patent application, the examiner rejected all pending claims over the Christian reference under 35 U.S.C. §§ 102 and 103. Heuft, in response, made amendments to the claims and argued, inter alia, that "the present invention provides for the increase and sharp decrease at an angle â of the distance between the railings creating the stable arrangement... The examiner did, however, stop applying the Christian reference after Heuft's amendments to the claims, presumably because the added limitations persuaded the examiner that the claims were patentably distinct.

Thus, throughout the course of prosecution of the '408 patent, Heuft not only repeatedly distinguished its claims over the Christian reference on the basis of the large exit angle's ability to stably arrange the containers, it also amended all of those claims to require an exit angle between 30° to 100°, a span which directly tracks the only discussion in the specification indicating an appropriate range for stably arranging containers. Under these circumstances, we have little difficultly concluding that Heuft clearly and unmistakably disclaimed exit angles less than 30°, at least with respect to the '408 patent. The salient question is whether this disclaimer flows to the related '974 patent.

'974 was granted without rejection. But, in U.S. case law, that does not necessarily release claim construction of a child from the shackles of its parent. And so it was here.

It is well-settled that "prosecution disclaimer may arise from disavowals made during the prosecution of ancestor patent applications." Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1314 (Fed. Cir. 2007) (quoting Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1333 (Fed. Cir. 2003)). "When the application of prosecution disclaimer involves statements from prosecution of a familial patent relating to the same subject matter as the claim language at issue in the patent being construed, those statements in the familial application are relevant in construing the claims at issue." Id. Thus, the issue is whether the disclaiming statements Heuft made with respect to the '408 patent related to the same subject matter that is at issue in the '974 patent.

[T]he statements Heuft made during prosecution of the '408 patent related to the same subject matter that is at issue in the relevant claim limitations of the '974 patent--namely, "arranging . . . containers . . . stable" and "means for the stable arrangement of . . . containers." Consequently, the arguments and amendments Heuft made during prosecution of the '408 patent also operate to disclaim exit angles less than 30° in the claims of the '974 patent.

Having its claims narrowed, infringement was quashed.

[W]hen Heuft broadly disclaimed exit angles less than 30° during prosecution, it foreclosed the possibility that it could later attempt to assert that a 12° or 14° exit angle is structurally equivalent to an exit angle that, due to the disclaimer, must be 30° or more. Consequently, because it is undisputed that the exit angles of IDC's accused products are substantially less than 30°, "the evidence . . . permits only one reasonable conclusion, and that conclusion is contrary to the jury's verdict." Pavao, 307 F.3d at 918. Accordingly, IDC is entitled to judgment of non-infringement as a matter of law.

Reversed and remanded "to enter judgment in favor of IDC."

Inexplicably, this rather tidy ruling, which could serve as precedent, is foreclosed by some form of CAFC paranoia in making the ruling non-precedential.

Full post as published by The Patent Prospector on June 25, 2008 (boomark / email).